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AIPPI Congress Report 11: What's the (technical) problem?

The identification of the technical problem is an important aspect of European patent practice. In this panel discussion on the final day of
the AIPPI World Congress in Sydney, practitioners from Germany, the US, China and Japan explored the
importance – or otherwise – of identifying the technical problem in their
respective jurisdictions. James Ellsmore (KWM) reports on Tuesday's final panel session:

"The European Patent Office’s
problem-solution approach to assessing obviousness renders the identification
of the technical problem central. It is also
a requirement of the European Patent Convention that an application for a
patent state the technical problem the claimed invention solves (at least
implicitly, if not in explicit terms). It
was against this background that Dietmar
Haug, Senior IP Counsel with KNH
Patentanwälte, led a panel of practitioners in a discussion of the metes
and bounds of the technical problem and its relevance to prosecution practice
and infringement proceedings.Marina Cunningham,
Managing Partner of McCormick Paulding &
Huber, explained that the requirement to indicate the technical problem in
a European application stood at odds with drafting practice in the US. In the US, Marina explained that current
practice is to limit the description of the technical problem in the background
section as much as possible. This is
done for several reasons and stands in contrast to previous practice in the US,
when applicants used the background section to define the technical problem
addressed by the claimed invention. As
Marina explained, framing the problem in this way and identifying the closest
prior art did not always work to the applicant’s advantage during prosecution
or litigation and has now been abandoned.Sitting on the continuum between Europe and
the US, Yali Shao, a
partner of Liu, Shen & Associates
explained that like Europe, China had adopted the requirement that a Chinese
application describe the technical problem.
However, it is not a mandatory requirement: if there is no description
in the specification, the examiner will not require the applicant to add a description
into the specification. Yali canvassed a
number or pros and cons for either stating or not stating explicitly the technical
problem in the specification. Yali’s
suggestion was that the Chinese application should state in a non-limiting way
that more than one technical problem can be solved by the invention: “the
invention solves at least one general problem and several specific problems”. The one exception to the foregoing rule, Yali
said, was that for business related inventions in China, an applicant should explicitly
describe the technical problem in the specification, as this will often assist
in demonstrating to the examiner that the claimed business method presents a technical
solution and thus exhibits the required technical feature for grant.In Japan, like the US, there is no
requirement that a specification include a description of the technical problem. However, there are, as Nobushige Furuhashi,
a partner of Abe, Ikubo
& Katayama explained, benefits during prosecution in stating the
technical problem – doing so may enhance an applicant’s chances of favourable
examination as it is an opportunity to frame the problem that the invention
overcomes in a way favourable to the applicant.The panel went on the discuss the effects
of stating the technical problem and what impacts this might have for
prosecution of the application where objections are raised based on novelty,
obviousness, sufficiency and unity of invention, as well as the importance or
otherwise of having an identified technical problem in cases of patent infringement.The panel session was a timely reminder of
the difficulties faced by applicants filing patents in multiple jurisdictions
and a valuable opportunity to learn more about how the specific issue of
describing the technical problem is treated in different jurisdictions."

Thanks for that Report, which I read with a sinking feeling in my stomach, that panellists are creating unnecessary difficulties and misunderstandings and (as usual) making a scapegoat out of the EPO's "Problem and Solution Approach". Why is this ever the case, I wonder.

My point is that what disclosure you need to include in the original patent filing for Europe is not what the Panel Chair said it was.

The reaction from the USA, that such drafting imperatives (stating "the problem") are incompatible with drafting for the USA, might be right. But, gentle readers, what if "stating the problem" is not actually required?

The way I see it, the EPO explores obviousness by toggling between the technical features recited in the claim and the technical effects they deliver. In his definitive book on drafting in Europe and the USA, Professor Paul Cole equates patentability with "A difference, that makes a difference". If I may state it in other words "A new combination of technical features that delivers a technical effect". What one needs in the original application, therefore, is not only a disclosure of the features but also of the effects delivered by that specific combination of technical features. No more than that.

Do the courts of the USA punish drafters and patent owners for saying in the application as filed what effects one gets with the claimed feature combination? I suspect not. But if they do, it is not helping to achieve the aims of the patents clause of the Constitution of the USA, to "promote the progress" of Useful Arts ie technology.

Amirite? Or do you disagree with me? Will other readers comment, please.

Agreed re the "no more than that". Also I thought a technical effect canhelp in the US too (Enfish) or did I misunderstand?

A US view of Paul Cole's Fundamentals of Patent Drafting (I haven't seen one?) and whether US practice has since moved on/changed would be helpful. I believe a copy of the book is still given by CIPA to students joining the patents profession in the UK.

It occurs to me that some readers might retort, in reply to my posting above, that EPC Rule 42 "Content of the Description" makes it mandatory to recite "the problem" in the application as filed. I have two thoughts on that.

First, when was a patent application ever refused by the EPO, or an issued patent ever revoked, for the reason that the application as filed failed to disclose "the problem"?

Second, if you read the text of Rule 42, after reading my posting above, and with knowledge of the EPO's Problem and Solution Approach to the analysis of obviousness, you can discern the beautiful clarity and simplicity of the EPC's substantive law of patentability, how it optimises, in a First to File context, the promotion by the patent system of progress in the useful arts.

I once had an application refused because the Examining Division said that although the vector I had limited to was novel and 'not obvious' from the prior art, the technical advantage was not properly disclosed in the application. Whilst that was lack of inventive step, I think that would be called 'plausibility' nowadays. So you can get into trouble in Europe for not disclosing the problem, and I think as plausibility becomes ever more important (see T488/16 showing it now applies to small molecule pharma inventions) I think there does need to be some discussion of the 'problem' in the spec.

I have no problem with the problem solution approach. I work in the chemical/pharma area. Applications are drafted that satisfy patent offices around the world, even the EPO and USPTO!

Aside from the technical problem/advantage points, let us bring 'utility/industrial applicability' into the mix. Novel compounds must have a utility. They are made for a purpose. Pharmaceuticals are made with the intent of treating disease. Hey Presto! By simply stating that the compounds of the invention are intended to treat disease X, we have provided plenty of information to cover the utility and problem/solution requirements.

Plausibility is an extra that comes from the plausibility of the disclosure supporting this benefit/advantage/solution.

If the treatment of disease x is considered obvious due to prior art considerations, for example, where the invention is a selection, there must be some other advantage/unexpected effect that provides inventiveness. It is well established case law of the EPO that there must be some basis in the application for relying on this benefit. This is entirely reasonable, because otherwise an applicant can claim something that is novel only at the time of filing, and then come up with the inventive aspect in the future. Patents are/should be granted only for making an inventive contribution and not to land-grab applications with no support.

I agree with Max that the problem solution approach is much-maligned, unjustly. In my experience, a lot of it came from old-**** UK patent attorneys who didn't like the new world (EPO approach). Whether they have counterparts across Europe I cannot say. Any misgivings from US practitioners can only be down to being misled by such people and the descendants of their opinions.

A major gripe of mine is the power of panellists at these conferences who share their opinions as industry-supported gospel. These are personal opinions of those who travel the globe sharing their opinions, when they may benefit from getting stuck in at the coalface.

I was just responding to your point: 'First, when was a patent application ever refused by the EPO, or an issued patent ever revoked, for the reason that the application as filed failed to disclose "the problem"?'

At the EPO it can be helpful to explicitly refer to a problem:[https://e-courses.epo.org/wbts/htgaep_en/html/page109584.html]

My point was just that Examiners can become difficult when the problem is not discussed properly, even though the relevant claim is novel and not obvious from the prior art.

I don't dispute that, Suleman Ali, at the EPO, it "can be helpful" to be explicit about the problem. But that of course is the inventor's subjective problem. In the days when the EPO did a First Class search, better prior art turned up, and rendered the subjective problem moot. From then on, you need disclosure (in the appln as filed) of those technical effects I mentioned, or else you have not got any longer a very convincing "objective technical problem" with which to build your Art 56 defence.

Why is EPO-PSA treated so shabbily? I agree with the contributor about old farts in the UK. But the judges (including the ones in Germany) are not much better. For them it is an affront, that a mere Patent Office has a better approach to obviousness than do their precious courts. At the slightest excuse, they brush it aside as superficial, lightweight, not "deep" enough.

The coal face? Oh so right. Our job is to make patents that will withstand scrutiny in the courts, 20 years from now. We at the coal face have to look ahead. The litigators do the exact opposite.

Without disagreeing with your defence of PSA, I would say that practically speaking there are situations where it doesn't help the overall economic system. I'm thinking of situations where the claim is so narrow that it won't really get in anyone else's way (i.e. easy to engineer around), but even such a narrow claim provides comfort value to the patentee as their favourite reagent is then covered. I think once claims become very narrow EPO Examiners will allow them, though they would not pass the PSA test. I don't see anything wrong with that, and I don't think it hurts anyone.

Also in regards to litigation, at least in the UK, I think the courts end up with so much evidence and argument on inventive step that the approach that is used would not affect the outcome. Once you have two parties each arguing against the other, you don't need a structured test as much. The PSA is good in Examiner/applicant situations as it works without needing too many resources (expert declarations, cross-examination, etc). I don't think there is any systematic problem with the UK courts and how they look at inventive step (reasonable expectation of success perhaps being an arguable point here), though they are not strict about using PSA.

I feel compelled to reply to Chris, who is thinking about the patent owner's "day in court".

Of course, when parties have invested millions in litigating a key patent, they expect rigorous treatment of the obviousness issue. Thank goodness that English law fact-finding is there, to see through the dissemblers, and expose the truth. Where else on Earth can that happen, than in an English law jurisdiction.

But English fact-finding can be applied beautifully to the EPO-PSA obviousness test, which i) encourages excellence in patent drafting, ii) accords with "real life" experience in a research lab, yet iii) treats obviousness objectively, through the mind of that legendary beast the PHOSITA (person having ordinary skill in the art) and iv) minimises the importance of technical opinions reached ex post factively. What more do you want?

I think the courts should adopt the EPO structured approach because, then, everybody involved (parties, judge) knows what the "Rules of the Debate". If there are no Rules, you get something like BREXIT DD vs Barnier ie slow progress.

Chris, you'll be pleased to hear the amendments to the UK Patents Act have been agreed in parliament:

1.-(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -(a) the invention is new;(b) it involves an inventive step;(c) it is capable of industrial application; or(d) the grant of a patent for it doesn't hurt anyone.

I am hurt by the notion of (d) that anything being granted exclusive rights can pass the notion that somehow, somewhere, such exclusivity does not hurt someone.

What is the level of "hurt" involved in cancelling such a patent? Given that the list is in the alternative, and thus any one condition suffices to extinguish a patent, (d) appears to be a poison pill that makes the entire patent system a nullity.

That is an odd thing to say, and I would say that if I was NOT surprised,then the expectation would go to mitigate whether or not I was hurt.

In other words, - you are off by about 180 degrees.

Further, the rather bald statement of "Such claims really don't bother anyone and so why not grant them?" quite misses the point that ANY granted claim that carries with it an exclusivity can EASILY be said to hurt someone.

It is the fact of exclusivity in and of itself that carries with it the possibility of "hurting." As there was NO criteria or level of hurt provide, ANY hurt will do - and as noted above, since the list is in the alternative, the "ANY hurt will do" eviscerates the entire patent system.

Thanks anonymous of 1:33. What about the 2 points I made about patent theory changing and patents being subservient to the greater good of serving the economy and innovation? Would you agree with them?

Having been in the profession many years I feel we don't always serve our clients very well, and given how damaging not having a patent can be for small companies I think we should bend the rules a little for them. At some point we may have a separate inventive step for small entities that could never enforce their rights, but in the meantime I think we do have an informal system in place where very narrow claims get granted. That seems very practical to me

Seeking to switch the focus from what I have provided to "other points" seems like a smokescreen.

That being said, let's look at your two other points.

1) Patent Theory changing: Your scant reference to "(see the recent changing of the Improver questions)" is not enough for me to understand what point you are attempting to make, so I leave this for further developemnt on your end.

2) subservience to some greater good: this directly ties to the fallacy of "not hurting anyone." As such, consider this answered already.

Even taking such a look at your "two other points," and realizing that these really do not address the points that I have supplied, I think that these do not appear to be in harmony with your last paragraph.

I do not get the feel that you understand that "just having" a patent for a small company is NOT all that helpful. Any entity that "Could never enforce their rights" is basically wasting their time obtaining a patent.

Further, current systems for narrow claims are anything BUT informal, and informality will certainly not make all things rosy, as that path leads to (and make no mistake, the competition will only too gladly point this out) low quality rubber stamped "Approve Approve Approve" patents.

It is also worth noting that any entity with such "low quality" patents that CANNOT enforce will soon monetize any such items obtained by selling the property to a third party enforcement entity (thereby FEEDING the "Tr011" storyline).

I have to wonder if "step two" involves some type of alternate treatment of patent property (not defeasible) or involve some type of "must make" either of which does more harm than good to those same small companies.

It is almost as if you are aiming for the type of "friendly fire" that the Big Corps are wanting with your path.

Chris,what surprises me is that you say what you do, yet purport to have been in the industry for many years. Are you on the correct blog? This is about the patent industry. Patents provide monopolies in order to enable the patentee to block the actions of another party. If nobody is hurt, nobody is being blocked from acting freely. If you are in the industry, I guess you act for those hard-done-by, misunderstood, inventors of perpetual motion machines. But, just imagine the hurt if you do manage to obtain grant of a patent covering one of those things! With the quality issues at the EPO getting worse, you may soon see your first allowance.

If my amendment to the UK Patents Act was not in the alternative for (d), no patents would get granted, except those drafted by Chris.

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